WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivatis Holding AG v. danianzhu

Case No. D2020-3538

1. The Parties

The Complainant is Vivatis Holding AG, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.

The Respondent is danianzhu, Taiwan Province of China.

2. The Domain Name and Registrar

The disputed domain name <vivatis.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2021

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 3, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an Austrian food and beverage company that exports to central Europe. The Complainant is the owner of trademark registrations, including Austrian trademark registration number 182263, registered from May 26, 1999, and European Union trademark registration number 1112200, registered from June 2, 2004. Both registrations specify goods and services in multiple classes. Both registrations remain in effect. The Complainant has also registered domain names consisting of “vivatis” in various Top-Level Domains (“TLDs”), including <vivatis.at>, <vivatis.com> and <vivatis.cn>.

The Respondent is identified in the Registrar’s WhoIs database by what appears to be a nickname, while his contact street address is manifestly false. Evidence provided by the Complainant shows that the Respondent’s contact email address is associated with over 3,000 domain names, many of which contain third party trademarks.

The disputed domain name was registered on March 29, 2020. It formerly resolved to a website in Chinese that displayed content identical to that of a website for a certain heavy machinery company but partially obscured. The website to which the disputed domain name resolved advertised in its header pornographic videos available on another website (the “AV website”) and it repeatedly displayed the address of the AV website and other websites that display links to gambling and pornography websites. At the time of this decision, the disputed domain name no longer resolves to any active website; rather, it is passively held.

The Registrar confirmed that the language of the Registration Agreement is English.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s VIVATIS trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is completely unknown to the Complainant. The Complainant is not aware of any own rights of the Respondent in the sign Vivatis. The Complainant is not aware to have authorized Respondent to use the VIVATIS mark or of any relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the VIVATIS mark as a domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent must have been aware that the disputed domain name was identical to the Complainant’s trademark. The disputed domain name was clearly registered and used in order to free ride on the reputation and fame associated with the Complainant’s trademark, likely by means of increased traffic on hosted websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence presented, the Panel finds that the Complainant has rights in the VIVATIS mark.

The disputed domain name wholly incorporates the VIVATIS mark as its operative element.

The only other additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.net”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name formerly resolved to a website that appears to have cloned, in part, a certain heavy machinery company’s website. However, this content was partially obscured and the Respondent does not appear to have used the disputed domain name in connection with an offering of heavy machinery. Rather, the Respondent appears to have used the disputed domain name to promote gambling and pornography by promoting the AV website and displaying its address, and the addresses of other websites, that link to gambling and pornography websites. The disputed domain name wholly incorporates the Complainant’s VIVATIS trademark as its operative element. The Complainant submits that the Respondent is completely unknown to the Complainant. Nothing on the Respondent’s website indicates any connection between its content and the disputed domain name. At the time of this decision, the disputed domain name is passively held. Accordingly, the Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy.

The Respondent is identified in the Registrar’s private WhoIs database only as “danianzhu”. There is no evidence the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2020, many years after the Complainant obtained its trademark registrations for VIVATIS. The disputed domain name wholly incorporates the VIVATIS mark as its operative element. The Complainant has made long-standing use of its VIVATIS trademark, which has acquired a considerable reputation, particularly in the food and beverage sector. The Respondent offers no explanation for his choice of the disputed domain name. According to evidence provided by the Complainant, the Respondent has registered other domain names that incorporate third party trademarks, as does the disputed domain name. In view of these circumstances, the Panel considers it likely that the Respondent knew, or should have known, of the Complainant and its VIVATIS trademark at the time that he registered the disputed domain name.

The Respondent formerly used the disputed domain name, which is identical to the Complainant’s VIVATIS mark, to promote the AV website and other websites, which display links to gambling and pornography websites. This use was intentional and either for the commercial gain of the Respondent or the operators of the AV website and the linked websites, or both. Given these circumstances and the findings in section 6.B. above, the Panel considers that, on the balance of probabilities, the disputed domain name was intended to attract Internet users by creating a likelihood of confusion with the Complainant’s VIVATIS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on that website within the terms of paragraph 4(b)(iv) of the Policy.

The Panel notes that the use of the disputed domain name has since changed, and that it no longer resolves to an active website. This change of use does not alter the Panel’s conclusion and may in fact constitute a further indication of bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vivatis.net> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 14, 2021